Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Full details of observer status are available here from the WIPO website (kindly sent by the IPKat's Dutch friend Angela) which states, in relevant part:

"WIPO welcomes the inclusion of stakeholder organizations and interest groups as observers at the formal meetings of Member States. WIPO also seeks to involve NGOs, IGOs, industry groups and all other stakeholders as widely as possible in consultation processes and debates about current issues.

Some 250 organizations are currently accredited as observers at WIPO meetings. ...

Any organization wishing to apply for permanent observer status should submit a request to the WIPO Secretariat. The Secretariat then presents the request to the Assemblies of the Member States for approval. To do so, the Secretariat requires the following information from the applicant organization:

For an Intergovernmental Organization (IGO)

(i) Information on the organization’s structure and objectives,(ii) a copy of its constituent instruments,(iii) a list of its officers,(iv) a list of its members,(v) the composition of the governing body of the organization and(vi) information on its activities and interests, particularly those related to the protection of intellectual property.

For an International or National Non-Governmental Organization (NGO)

(i) The text of its constituent instrument (articles of incorporation, bylaws, etc);(ii) an indication of the date and place where it was established;(iii) a list of its officers (showing their nationality in the case of an international NGO);(iv) a complete list of its national groups or members (showing their country of origin in the case of an international NGO);(v) a description of the composition of the members of its governing body or bodies (including geographical distribution in the case of an international NGO);(vi) a statement of its objectives;(vii) an indication of the field or fields of intellectual property (e.g. copyright and related rights) of interest to it.

The following principles are observed in extending invitations to national NGOs, as observers:

Below: some NGOs have been around for a long time. Do they,the IPKat wonders, address modern needs?

(a) The organization shall be essentially concerned with intellectual property matters within the competence of WIPO and shall, in the view of the Director General, be able to offer constructive, substantive contributions to the deliberations of the Assemblies of WIPO;

(b) The aims and purposes of the organization shall be in conformity with the spirit, purposes and principles of WIPO and the United Nations;

(c) The organization shall have an established headquarters. It shall have democratically adopted statutes, adopted in conformity with the legislation of the Member State from which the NGO originates. One copy of the statutes shall be submitted to WIPO;

(d) The organization shall have authority to speak for its members through its authorized representatives and in accordance with the rules governing observer status; and

(e) The admission of national NGOs to observer status shall be the subject of prior consultations between Member States and the Secretariat".

The IPKat wonders why an organization that fulfils all the other criteria "shall have an established headquarters" - would that requirement exclude, for example, the (yet-to-be-formed) Intellectual Property Blogmeisters and Wikipersons International, an organisation that - for all its deep knowledge of IP matters and genuine concern about both IP policy and legal detail - can function quite well with a headquarters in cyberspace. Merpel says, hey, this is a good idea, but you'll need a more attractive name. In any event, if you blog and/or write wikis in the IP field and are interested in setting up such an organisation, email the IPKat here and let him know.

A discreetly anonymous but sincerely concerned friend of the IPKat has asked him to draw attention to two curious trade mark applications.

Right: ITMA, which has often cherished lofty ambitions, is now keen to put them into practice

The first is an application by ITMA, the then Institute of Trade Mark Agents (now Attorneys) in the UK, to register the words TRADE MARK ATTORNEY as a certification mark in Class 42 for

professional, legal and research services relating to industrial and intellectual property; name creation services; searching services; trade mark and design filing and prosecution services; advisory and consultancy services in the field of industrial and intellectual property; maintenance and renewal services; trade mark watch services; trade mark and design services.

This application is subject to the limitations that the mark

"... shall not prevent a person who is entered on the list of professional representatives before the Office of Harmonisation in the Internal Market (OHIM) in pursuance of the Community Trade Mark from using the title "European Trade Mark Attorney".

... Nothing in these regulations shall prevent the use of the title "Trade Mark Attorney" by any person who is a registered trade mark agent".

Having heard that the application, which was published in November 2006, is opposed by the Law Society and the Chartered Institute of Patent Attorneys, the Kat is passing no comment at this stage - though as usual he welcomes his readers to do so, and suspects they will.

The second is Priams Sarl's application to register the word TRADEMARK as a Community trade mark for various goods in Classes 14 and 25 and goods in Class 36, filed earlier this month but with priority from a French filing late last year. The IPKat foresees problems getting this one to stick as a CTM, though Merpel reminds him that it may well sneak home as a national mark in any non-English-speaking country: there are many examiners in such locations who will be easily convinced that no relevant consumer will have even the faintest notion that the word is not a completely arbitrary, invented sign - like DONUT.

1 comment:

Jim Boff
said...

I would like to comment on a couple of inaccuracies in this article concerning the application for a certification mark "TRADE MARK ATTORNEY".

Firstly, the application is not in the name of ITMA, it is in the name of The Registrar of Trade Mark Agents. You are not the only ones confused - the regulations to the mark say the proprietor is ITMA.

Secondly, the mark is not being opposed by CIPA and the Law Society - it is being opposed by me (in a personal capacity) and the Law Society. Although I am on CIPA Council, my opposition is not supported by CIPA.

It will be good when the online Register provides a little more information to the public than simply that a mark is being opposed. Roll-on electronically accessible files as in the EPO [and soon in OHIM?].

My case is very different from that of the Law Society in one very important respect. The Law Society argue that the word "ATTORNEY" implies a legal qualification - I argue that the term ATTORNEY means someone authorised by another to act on their behalf [i.e. being near synonymous with "Agent"], and that anyone authorised by another to deal in trade mark matters on their behalf is by definition acting as a trade mark attorney.

This mark also raises some interesting procedural questions.

Firstly, it was filed as a collective mark and then amended to be a certification mark - a change I think changes the identity of the mark and not in any way envisaged in the rules.

Secondly, the regulations have been changed in the course of opposition and the Registry consider that there is a lacuna in the rules, which only describe what happens in the event of amendment to the regulations post grant.

This application and the oppositions to it may clarify a number of interesting legal issues.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':

Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

The IPKat's sidebar contents

Want to complain?If you feel that you have been unfairly prevented from posting a comment on one of this weblog's features, here's what you can do about it

The IPKat's cousins: some IP-friendly blogs for youThe IPKat lists his 'family' of IP blogs, some of which focus on specific rights, geographical zones, markets or interests

How many page-views?See how many times the pages of the IPKat weblog have been purr-viewed

The Kat that tweetsToo short to blog? Some news and views are still worth airing, thanks to Twitter

Want to receive the IPKat weblog by email?You can get each post, or a digest, sent direct to your favourite mailbox

Not just any old IPKatEvery so often, this feline creeps into the limelight

The IPKat's RSS feeding arrangementsFeedburner and all those other things ...

What you've been sayingHere are the most recent readers' comments on the IPKat's posts

The IPKat's Greatest Hits!Here are the five posts on the IPKat's weblog that have received the most attention from readers over the past 30 days

Has the Kat got your tongue?Some translation facilities for readers whose first language is not English, or who are just plain masochistic

Creative Commons licenceYou too can make use of this blog's contents, if you follow the rules

The IPKat ArchiveAncient posts, going back to June 2003

Want to complain?

If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation -- essentially that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should be relevant to the blogpost on which they purport to comment.

If you feel that your comment should have been moderated, please email the IPKat at theipkat@gmail.com and let him know, since it may be that your comment has been misdirected into the Blogger software's Spam file.

In the event that there has been no software malfunction and that your post has been rejected, if you want to appeal against this decision please contact either (i) Dr Danny Friedmann of theIP Dragonweblog (ipdragon@gmail.com) or (ii) Professor Dennis Crouch of the Patently-O weblog (dcrouch@patentlyo.com). Danny or Dennis will review your complaint, preserving the confidentiality of your identity and will let both you and us know whether your complaint is justified.

If your complaint relates to bias or distortion, the IPKat suggests that you contact him initially, bearing in mind that he and Merpel are generally willing to host pieces by guest contributors even when their opinions are at odds with those of this blog's contributors.